The Complainant is The Goodyear Tire & Rubber Company, United States of America (“United States”), represented by Basham, Ringe y Correa, S.C., Mexico.
The Respondents are Artemio Garza, Mexico, Sunil Shahzad, Pakistan, and Promotora Internacional de Neumáticos SA, Mexico, all self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2020. On January 7, 2020, the Center transmitted by email to the previous registrar Register.com a request for registrar verification in connection with the disputed domain name. On January 10, 2020, Register.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2020 providing the registrant and contact information disclosed by Register.com and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 16, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2020. On January 28, 2020, the Center received an email communication from the Respondent Artemio Garza. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2020. The Respondent Artemio Garza (“the first Respondent”) sent an informal email communication to the Center on January 28, 2020 but did not submit a formal response. Accordingly, on February 11, 2020, the Center notified the Parties that it would proceed to Panel appointment. Upon commencing the Panel Appointment process, the Center ascertained that a cyberflight had occurred, as the disputed domain name was transferred from the initial registrar, Register.com, to the registrar Namecheap, Inc., indicating new registrant details, i.e. “Sunil Shahzad”. On March 20, 2020, the Center informed the Parties that a cyberflight had occurred in this matter, involving a registrant and registrar change. The Registrars not proceeding to restore the initial registration details of the disputed domain name, the Center appointed Luca Barbero as the sole panelist in this matter on June 4, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. Pursuant to the administrative panel procedural order (“Panel Order No. 1”) issued by the Panel on June 19, 2020, the Center delivered a copy of the amended Complaint by courier, and the amended Complaint with the related Annexes by electronic means to the currently named registrant of the disputed domain name Sunil Shahzad (“the second Respondent”), requesting that it submitted its comments as to the Complainant’s statements within 14 days from the issuance of the Center’s correspondence (i.e. by July 3, 2020). On June 23, 2020, the second Respondent sent an email communication to the Center, in copy also to the Complainant’s representative, in which it stated that the disputed domain name was registered on behalf of a client, providing its name (i.e. Artemio Garza, corresponding to the name of the first Respondent) and contact details. On June 25, 2020, the Complainant filed a Supplemental Filing. On the same day, the Respondent Promotora Internacional de Neumáticos SA de CV (“the third Respondent”) filed its Supplemental Filing in response to the Panel Order No. 1. On July 7, 2020, the third Respondent sent an email communication to the Center. 4. Factual Background The Complainant is one of the world’s leading tire companies, with operations in most regions of the world. Together with its United States and international subsidiaries, it develops, manufactures, markets, and distributes tires for most applications. It also manufactures and markets rubber-related chemicals for various applications. The Complainant is also one of the world’s largest operators of commercial truck service and tire retreading centers. In addition, it operates approximately 1.100 tire and auto service center outlets where it offers its products for retail sale and provides automotive repair and other services. It manufactures its products in 47 facilities in 21 countries and has marketing operations in almost every country around the world. The Complainant is the owner of several trademark registrations for GOODYEAR, including the following, as per trademark certificates submitted as annexes to the Complaint: - Mexico trademark registration No. 417711 for GOODYEAR (word mark), filed on October 24, 1991 and registered on June 30, 1992, in international class 12; The Complainant is also the owner of the domain names The disputed domain name The website has been amended following the filing of the Complaint by removing the figurative trademark GOODYEAR and replacing it with a logo including the wording “Llantas de Mexico”. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the trademark GOODYEAR in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “llantas”, meaning tires in Spanish, and the generic Top Level Domain “.com”. The Complainant further highlights that the word “llantas” clearly refers to the Complainant’s business and thus also gives the impression that the Respondents may in some way be associated to Complainant. The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain name for the following reasons: - the Respondents are seeking to deceive Internet users by passing off as the Complainant through the use of the disputed domain name; With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondents, by using the disputed domain name, are gaining an unfair advantage by attracting Internet users to their website and making them believe that the tires sold are being sponsored by the Complainant. The Complainant also emphasizes that the Respondents have been found to have registered several other domain names in the past using other trademarks related to well-known tire companies, which proves that the Respondents were not only aware of the Complainant’s well known trademark, but have been acting repeatedly in bad faith for commercial gain. B. Respondents The Respondents did not submit a formal Response after the filing of the Complaint. Only the first Respondent sent an email communication to the Center, on January 28, 2020, denying all the Complainant’s allegations and indicating that he was no longer the owner of the disputed domain name as it had sold it to an international buyer. C. Parties’ Supplemental Filings In response to the Panel Order No.1, the second Respondent indicated that the disputed domain name was registered on behalf of a client and provided its name, corresponding to the one of the first Respondent, and its contact information. Upon receipt of copy of such communication, the Complainant submitted a Supplemental Filing in which it pointed out that the conduct of the first Respondent and its cyberflight activities amount to bad faith. The third Respondent submitted its Supplemental Filing in response to the Panel Order No. 1, in which it stated that: - the disputed domain name “is in a new host with the original registrant due the company is not trying to confuse or hide for either parties, the change of host was for better service and cost”; For the reasons detailed herein, the Panel deems appropriate to consider i) the previously named registrant of the disputed domain name Artemio Garza, ii) the current named registrant Sunil Shahzad and iii) the entity operating the website corresponding to the disputed domain name Promotora Internacional de Neumáticos SA as proper Respondents, also in light of the fact that the circumstances of the case show they have acted in concert in order to attempt to evade the consequences of the present UDRP proceeding. Indeed, the Complaint was originally filed against the third Respondent, whose data are published on the website to which the disputed domain name resolves. Upon receipt of the Center’s Registrar Verification request, the initial registrar Register.com disclosed the full data of the underlying registrant according to its records, which was identified as the first Respondent. Therefore, pursuant to the Center’s invitation to amend the Complaint, the Complainant filed an Amended Complaint in which it reflected the name and contact details of the first Respondent. After the notification of the Complaint, the first Respondent, however, claimed that it was no longer the registrant of the disputed domain name as it had sold it to an international buyer. The Center then ascertained that a cyberflight occurred since the registrar and registrant contact details for the disputed domain name had been changed and, in response to a new Registrar Verification request, the current Registrar NameCheap, Inc. identified the registrant as the second Respondent. However, as highlighted above, the second Respondent indicated to have registered the disputed domain name on behalf of the first Respondent. Moreover, in response to the Panel Order No. 1, a submission was received from the third Respondent, which confirmed to have been actually operating the website displayed at the disputed domain name to promote its business. In view of the foregoing, the Panel finds that, despite the cyberflight occurred after the filing of the Complaint, the disputed domain name has been actually held by the same individuals acting in concert. 6.2 Supplemental Filings As stated in Section 4.6 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel”. In the case at hand, in light of the change occurred in the registrant information for the disputed domain name after the notification of the Complaint, the Panel deemed appropriate to issue a Panel Order requesting that the Amended Complaint with the related annexes be forwarded to the newly disclosed registrant, i.e. the second Respondent, in order to put it in a position to provide its comments on the Complainant’s submissions. As highlighted above, however, the second Respondent failed to address the merits of the Complaint, merely stating to have registered the domain name on behalf of a client (i.e. the first Respondent). The Panel also deems appropriate to consider the submissions contained in the Complainant’s Supplemental Filing, which includes comments about the cyberflight occurred and the second Respondent’s disclosure of the first Respondent as beneficial owner of the domain name, since both the registrant change and the second Respondent’s response could not be foreseen by the Complainant at the time of the filing of the Complaint and the subsequent Amended Complaint. Exercising its discretional powers, the Panel has also decided to consider the third Respondent’s Supplemental Filing and the related allegations addressing the merits of the Complaint, noting however that such Respondent could have submitted them already after the notification of the Complaint, since its email address was put on copy by the Center in the Complaint notification email. 6.3 Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark GOODYEAR based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 8 to the Complaint. As highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In the case at hand, the Complainant’s trademark GOODYEAR is entirely reproduced in the disputed domain name, with the mere addition of the term “llantas” (“tires” in Spanish) and of the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondents’ rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondents. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Panel finds that the Complainant has made a prima facie case and that the Respondents have failed to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Indeed, based on the evidence on record, there is no relation between the Respondents and the Complainant and the Respondents have not obtained any authorization to use the Complainant’s trademark or to register and use the disputed domain name. In addition, there is also no indication before the Panel that any of the Respondents might be commonly known by the disputed domain name. The Respondents have been using the disputed domain name to advertise and sell GOODYEAR tires along with tires of Complainant’s competitors. Before the filing of the Complaint, the website at the disputed domain name also prominently displayed the Complainant’s figurative trademark. According to paragraph 2.8.1 of the WIPO Overview 3.0, “resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark. The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark”. In the case at hand, there is no evidence on records of any agreement executed between the parties as to the resale of GOODYEAR products and/or the authorization or prohibition to register the disputed domain name. Therefore, the Panel shall evaluate the presence of the cumulative requirements prescribed by the Oki Data test to determine whether the Respondents could be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. According to the screenshots submitted by the parties and the Panel’s review of the Respondents’ website published at the disputed domain name, the first condition is met as the Respondents appear to actually offer for sale GOODYEAR products; although there is no evidence that the Respondents might have tried to corner the market in domain names reflecting the trademark, the second and third conditions are instead not fulfilled, since the Respondents are advertising and selling also their resale of products of competitors on the website at the disputed domain name and have not published an accurate, evident and prominent disclaimer in the home page aimed at informing users about their relationship with the trademark owners. In view of the above, the Panel finds that the Respondents are not making a bona fide offering of goods or services under the disputed domain name. Moreover, since the activity promoted on the Respondents’ website is clearly commercial in nature, the Respondents are not making a legitimate noncommercial or fair use of the disputed domain name. Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondents in bad faith. As to bad faith at the time of the registration, the Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark GOODYEAR in connection with the Complainant’s products, ii) the well-known character of the trademark and iii) the confusing similarity of the disputed domain name with the Complainant’s trademark, the Respondents very likely registered the disputed domain name having the Complainant’s trademark in mind. In fact, the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s trademark and promoting the sale of Complainant’s products demonstrates that the Respondents were indeed well-aware of the Complainant and its trademark. The Panel further notes that, in view of the notoriety of the Complainant’s trademark, the Respondents acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondents, which have no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant. The Panel also finds that, by pointing the disputed domain name to a website promoting the Complainant’s business in the sale of GOODYEAR and competing products, publishing the Complainant’s figurative trademark and failing to accurately and prominently disclose the relationship with the trademark owner, the Respondents have intentionally attempted to attract Internet users to their website for commercial gain, by causing a likelihood of confusion with the trademark GOODYEAR as to the source, sponsorship, affiliation or endorsement of their website and the products promoted therein according to paragraph 4(b)(iv) of the Policy. As an additional circumstance evidencing bad faith, the Panel notes that the disputed domain name has been transferred to a different registrar and registrant after the notification of the Complaint, which constitutes cyberflight. Furthermore, the conduct of the first and of the third Respondents which, respectively, falsely asserted to have sold the disputed domain name to a third party and failed to file a timely Response, submitting their reply to the Complainant’s allegations only upon receipt of the Panel Order No. 1, constitute a further circumstance evidencing the Respondents’ bad faith. In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Luca Barbero
- Mexico trademark registration No. 448825 for GOODYEAR (figurative mark), filed on December 1, 1992 and registered on December 13, 1993, in international class 12;
- United States trademark registration No. 4494937 for GOODYEAR (word mark), filed on August 9, 2013 and registered on March 11, 2014, in international class 12;
- United States trademark registration No. 1167180 for GOODYEAR (figurative mark), filed on May 15, 1980 and registered on September 1, 1981, in international class 12.
- the Respondents have failed to provide a disclaimer on their website that would help Internet users realize that the Complainant and its trademark are totally unrelated to the website;
- the Respondents are not making any bona fide attempt or fair use to sell goods and services as they display the trademark GOODYEAR on their website along with images of tires and the Respondents have also copied the color combination used by Complainant on its website “www.goodyear.com.mx”;
- the Respondents are not commonly known by the disputed domain name as the trademark GOODYEAR can only be associated to the Complainant which legally registered such trademark long before the Respondents registered the disputed domain name.
- it has been purchasing and selling GOODYEAR original tires in Mexico for over 10 years, billing in its name, as shown by examples of invoices submitted as attachment to the Supplemental Filing;
- it has never been involved in any legal dispute or procedure with Mexican authorities for failing any order or transaction;
- the tires it is selling are purchased in Mexico through the GOODYEAR network;
- it did not establish its company with the intent to pass off as the Complainant;
- following the complaint received by the Complainant as to the confusing images posted on the website to which the disputed domain name resolves, it made changes to the website. 6.1. Identification of proper Respondents
Sole Panelist
Date: July 21, 2020
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